DCT
3:18-cv-00225
Tower Laboratories, Ltd. vs Lush Cosmetics Limited,
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tower Laboratories, Ltd. (Connecticut)
- Defendant: Lush Comsetics Limited, et al. (United Kingdom, Canada, Delaware, Nevada)
- Plaintiff’s Counsel: The Kelber Law Group, LLC
- Case Identification: 3:18-cv-00225, D.D.C., 09/19/2017
- Venue Allegations: Venue is alleged to be proper based on Defendants having committed acts of infringement and one defendant entity, Lush Cosmetics NY, LLC, having a place of business within the judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ "Bath Bomb" products infringe a patent related to foaming effervescent bath compositions.
- Technical Context: The lawsuit concerns chemical formulations in the personal care and cosmetics industry, specifically effervescent products that produce foam when added to bathwater.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the patent and the alleged infringement via hand-delivered letters in June 2017, prior to filing suit. Plaintiff further alleges that Defendants' counsel made unsupported assertions of prior use and refused to engage in substantive discussion, while not denying infringement, which forms the basis of the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 1999-08-27 | ’215 Patent Priority Date (Application Filing) |
| 2000-09-19 | ’215 Patent Issue Date |
| 2003 (approx.) | Alleged date of Defendants' first sales in the U.S. |
| 2017-06-XX | Plaintiff notifies Defendants of alleged infringement |
| 2017-09-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,121,215 - "Foaming Effervescent Bath Product", Issued September 19, 2000
The Invention Explained
- Problem Addressed: The patent describes the difficulty in creating an effervescent bath product that also produces a copious and stable foam ('215 Patent, col. 2:15-21). Prior art products, such as dense tablets, would sink to the bottom of a bathtub, and the resulting effervescent reaction would lack the agitation needed to create acceptable foam ('215 Patent, col. 2:37-42).
- The Patented Solution: The invention is a solid, low-density composition that floats on the water's surface ('215 Patent, col. 4:14-17). This floating action allows the rapid effervescent reaction to occur at the air-water interface, which provides the mechanical agitation necessary to "whip up" a foam by incorporating ambient air ('215 Patent, col. 2:43-49; col. 4:33-39). The composition combines an effervescent base (an acid and a carbonate) with an anhydrous surfactant selected for its foaming properties ('215 Patent, Abstract).
- Technical Importance: The invention provided a method for combining the sensory appeal of an effervescent "fizzing" reaction with the consumer-desired function of a foaming bubble bath in a single, solid product.
Key Claims at a Glance
- The complaint brings one count for infringement, tracking the language of independent claim 1 ('215 Patent, col. 10:5-16; Compl. ¶24).
- Essential elements of independent claim 1 include:
- A non-tableted solid foaming bath composition
- An effervescent base comprised of a carbonate/bi-carbonate salt and a solid organic acid
- An essentially anhydrous surfactant
- A density of no more than about 1.0 g/cc
- The composition floats on a water surface
- The composition exhibits a dissolution rate in water of at least about 0.4 g/sec at 40° C.
- The complaint does not explicitly reserve the right to assert dependent claims but refers to infringement of "the claims" of the patent generally (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are effervescent products sold by the Defendants, referred to as "Bath Bombs" (Compl. ¶18). Specific product names listed include "Intergalactic," "Pop in the Bath," "Fizzbanger," "Guardian of the Forest," and "Yoga Bomb," among others (Compl. ¶19).
Functionality and Market Context
The complaint alleges that the accused products are effervescent compositions that are "compounded with a surfactant" and have "a density no greater than one" (Compl. ¶18). The complaint alleges that a video on the Defendants' website shows the products being made "according to the method of the claims of the '215 patent" (Compl. ¶18). The complaint asserts these products are marketed through Defendants' retail stores and website (Compl. ¶20).
IV. Analysis of Infringement Allegations
’215 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A non-tableted solid foaming bath composition, comprised of: | Defendants' "Bath Bombs" are alleged to be compositions made according to the patent's method, as purportedly shown in a video. | ¶18, ¶24 | col. 10:5 |
| an effervescent base comprised of a salt of a carbonate or bi-carbonate and a solid organic acid, diacid or triacid, | The accused products are alleged to comprise an "effervescent couple." | ¶24 | col. 10:7-9 |
| said composition further comprising an essentially anhydrous surfactant, | The accused products are alleged to comprise a "surfactant that is substantially dry." | ¶24 | col. 10:10-11 |
| which said composition has a density of no more than about 1.0 g/cc, | The accused products are alleged to be "prepared at a density no greater than one." | ¶24 | col. 10:11-12 |
| said composition floats on water surface, and | This functionality is alleged to result from the claimed density. | ¶18, ¶24 | col. 10:13 |
| said composition exhibits a dissolution rate in water of at least about 0.4 g/sec, as measured at 40° C. | The accused products are alleged to "exhibit a dissolution rate in water at 40°C of at least about 0.4 g/sec." | ¶24 | col. 10:14-16 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the meaning of "non-tableted." The patent distinguishes its invention from prior art made with a "conventional tablet press" and "high forces of compaction" ('215 Patent, col. 2:52-56). The infringement analysis will depend on whether the Defendants' manufacturing process, which produces a solid molded product, falls within the scope of "non-tableted" as used in the patent. The complaint alleges a video on the Defendants' website shows the products are made via a method covered by the patent's claims (Compl. ¶18).
- Technical Questions: The complaint makes factual allegations regarding specific quantitative parameters, namely the density ("no greater than one") and dissolution rate ("at least about 0.4 g/sec") of the accused products (Compl. ¶24). A key evidentiary question will be whether discovery and expert testing can substantiate that the accused products meet these specific numerical limitations required by the claim.
V. Key Claim Terms for Construction
- The Term: "non-tableted"
- Context and Importance: This term appears in the preamble of Claim 1 and is fundamental to distinguishing the invention from prior art. The patent's entire theory of operation—floating at the surface to improve foaming—is predicated on achieving a low-density product, which the patent teaches is accomplished by avoiding the "high forces of compaction incurred in the tablet press" ('215 Patent, col. 2:55-56). The resolution of the infringement claim may depend entirely on how this term is construed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "non-tableted" should be given a broad construction to mean any composition not formed by a conventional, high-pressure tableting machine. The specification repeatedly contrasts the invention with products made on a "tablet press," suggesting the focus is on the specific equipment and forces used ('215 Patent, col. 2:49-56).
- Evidence for a Narrower Interpretation: A party could argue that the term should be limited by the specific "molding process" described in the specification, which involves using a small amount of water to "fuse" the reactants into a shelf-stable form without high pressure ('215 Patent, col. 2:57-65). Method claim 10, which recites making the "non-tableted" composition by mixing ingredients and placing them in a "mold," could be cited to argue the product claim is limited to products made by such a method.
VI. Other Allegations
- Indirect Infringement: The complaint states a claim for induced and contributory infringement (Compl. ¶1). It alleges that various Lush entities "actively work and cooperate together to promote the sale" of infringing products and that Lush Licensing, Inc. is engaged in licensing retail stores where the products are sold, which may form the factual basis for an inducement theory (Compl. ¶¶8, 11).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit notice (Compl. ¶¶1, 26). It states that Plaintiff hand-delivered a letter to the Defendants in June 2017 identifying the '215 Patent and the alleged infringement (Compl. ¶21, Ex. A). The complaint further alleges that in subsequent correspondence, the Defendants "did not deny infringement but refused to entertain any sort of discussion" and did not deny that their products fell within the scope of the claims, which Plaintiff will argue constitutes objective recklessness (Compl. ¶¶21-22, Ex. B, D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "non-tableted," which the patent contrasts with high-pressure compaction, be construed to read on the Defendants’ process for manufacturing its solid, molded "Bath Bomb" products? The complaint's reference to a video purportedly showing the manufacturing process suggests this will be a central factual dispute (Compl. ¶18).
- A second key issue will be one of evidentiary proof: can the Plaintiff demonstrate through testing that the accused products meet the specific quantitative limitations of Claim 1 for density (≤ 1.0 g/cc) and dissolution rate (≥ 0.4 g/sec)?
- Finally, the outcome of the willfulness allegation will likely depend on the court's assessment of the pre-suit correspondence and whether Defendants’ refusal to substantively engage after being put on notice of the patent rises to the level of egregious conduct required for enhanced damages.